Last week, Pokenet, a fan made online game that allowed players to login as Pokemon trainers and catch and trade Pokemon, turned off it’s servers after receiving a cease and desist letter from Nintendo. The event raises a few interesting legal questions.
First, is it correct to say, as the headline of the story did, that Nintendo “shut down” the site, or is that angry rhetoric from the online community? In a literal sense, in order for Nintendo to “shut down” Pokenet they would have either had to physically turn the servers off or obtained a court order commanding the developers to close up shop. A cease and desist letter doesn’t do either of these things. Nintendo’s attorneys told Pokenet that it was Nintendo’s opinion that Pokenet violated trademark or copyright rights and that if the site was not shut down, further legal action would follow. Pokenet didn’t have to comply. They could have retained an attorney and fought back. However, Nintendo is a massive company with an in-house legal staff and access to multiple powerful law firms. Pokenet was a collection of web developers creating a website in their spare time. The notion that they could have afforded a viable defense is laughable. So in that sense, yes, Nintendo shut down the site. It is worth remembering, though, that a cease and desist letter is not a court order and legal authorities will not act on it (that would require a temporary or permanent injunction), it’s a warning and a demand from one person to another (or multiple people). There have been David’s who have fought back against such Goliath’s in the past, often aided by talented attorneys looking to do some good for cheap.
A second question is whether or not Pokenet was in the wrong. Did they actually violate Nintendo’s trademark? The US Trademark & Patent Office grants protection for trademarks that are used in specific areas of commerce. I may, therefore, start lawfirm and call it Emerald City Law Group after my beloved Seattle. I could register the trademark for legal services. This registration would not stop someone from opening up an Emerald City music shop or bike store. I don’t own “Emerald City,” it’s a nickname for Seattle. Greater protection is given for names that are completely made up, such as Kodak or Bravia (or Pokemon). These words often receive a kind of global protection in that I couldn’t start a Kodak music shop or Bravia bike store, such names are so distinct that only the companies that coined them may use them. Looking at Pokenet, they lose on both considerations. The trademark “Pokemon” is registered for online video games and the word was made up. So, even if a kind hearted First Amendment attorney had wanted to take on Nintendo over the website, they would have lost.
Another question is why Pokemon went after Pokenet. The site didn’t charge users any money and only had 7,000 users at the time of shut down, so the “threat” posed to the core IPs and profits would seem to be minimal. Presumably, users of Pokenet are avid Poke-freaks who will still buy the games, collect the cards, and watch the show. Doesn’t Pokenet actually raise the profile of the brand? Why would the Elephant need to squash the bug? The first is that Pokemon holds a valid trademark and has the right to control the use of the mark in the video game space. If they deem it a business asset to be the only game in town, they may do so. Pokemon may someday want to launch such a program, but even if they don’t, they have the right to stop anyone else. Pokemon may have had reasons other than financial to shut Pokenet down, the game may have been subpar and made the brand look bad.
Another reason Pokemon went after Pokenet is the property doctrine of laches, which states that the true owner of a property may lose rights to the property if they don’t actively protect it when someone attempts to encroach. The doctrine has been ported to intellectual property, so Pokemon is forced to go after the small “trespassers” if they want to retain the right to go after the large ones.
One last irony is that if Pokenet had been a satire of Pokemon, rather than a faithful recreation, they would have stood on higher legal ground. Spoofing, satire, and commentary are protected under free speech. So if the developers at Pokenet wanted to do a build of the game “Pinch-and-Chew” instead of “Pikachu” and make fun of the original IP, they’d be fine. However, because they made a game that honored the core IP, they can’t fight back. This may seem like a backwards result, but sometimes that what the law gives.
*Note: I refer Nintendo and Pokemon interchangeably in this posting. The two companies are separate entities in the US, but as Nintendo’s legal department is much larger than Pokemon’s, the junior company uses the Big N for anti-piracy and similar type matters. Without seeing the cease and desist letter, it cannot be said if Nintendo, Pokemon, or outside counsel actually flexed the muscle in this case.